UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 11/26/2018

 

This Office action is in response to applicant’s communication filed on November 13, 2018.  The requirement for clarification of the identification and classification of the services is continued and maintained.

 

Clarification of Identification and Classification of Goods and Services Required

 

The proposed amended wording must be clarified because it is too broad and includes services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular,

 

• provision of “imagery” could include downloadable images files as goods in International Class 9, the service of providing a website featuring non-downloadable photographs and videos in International Class 41
• consulting about price comparison, energy use management and efficiency and business risk management is in International Class 35, energy investments is in International Class 36
• supply chain logistics management services are in International Class 35 and supply chain logistics that are storage, transportation and delivery are in International Class 39
• information and consulting about energy disruption that is distribution related is in International Class 39 and disruptions in generation is in International Class 40
•  consulting about catastrophes is classified according to the type of consulting provided
• provision of information about medical conditions and emergencies is in International Class 44

Applicant is advised that requests to transfer goods and/or services between applications are subject to the following requirements:

 

• In order to transfer goods/services between applications, the applicant must provide the following in the original application:  a request to delete specified goods/services in the original application and specification of the serial number of the application to which the goods/services are to be added. TMEP §1402.08.  Applicant must also file an amendment in the receiving application specifying the goods/services to be added and the serial number of the application from which they are to be moved from.  Id.

 

• Transfers are only permitted if the original application was filed on or before the filing date of the application to which the goods/services are to be moved, the goods/services are properly in a class other than those in the original application, and the application to which they are to be moved includes the proper class, and neither application has been approved for publication.  Id.

 

A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services.  Wording in italic type represents items in the identification that require clarification.  Bold italic type indicates changes to applicant’s original identification.  Strikethrough marking indicates wording that must be deleted.  Wording in [brackets] following a fill in the blank provides guidance and examples of acceptable amendments.  For example, if the original identification is “clothing,” and the suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing, namely, shirts, pants and coats” in the response to the office action. 

 

International Class 35:  Consulting in the field of energy, namely, business risk management consulting, energy price comparison consulting, and energy usage management and efficiency consulting; Providing information in the field of energy and supply chain logistics, namely, information about supply chain management for energy goods; Consulting in the field of catastrophes, namely, ____ [specify subject in this class, e.g., business continuity planning consulting for response to man made perils]

 

International Class 39:  Rental of unmanned aerial vehicles; Providing an interactive website featuring information, imagery, and analysis, namely, information in the field of transportation; Providing information, imagery, and analysis, namely, information in the field of transportation; Arrangement and provision of national and international medical transport services for patients by air, road or sea; Air ambulance transport services; Arrangement and provision of national and international medical transport services to transport patients back to their country of origin or citizenship by air, road, or sea; Consulting services in the field of energy, namely, for purposes of risk management and analysis, energy investment opportunity evaluations, energy price comparisons, energy usage management and energy efficiency; Providing information, imagery, and analysis in the fields of energy and supply chain logistics, namely, about ___ [specify subject in this class, e.g., storage, transportation and delivery of energy goods by air, ship and rail] supply chain security, cargo theft trends and recovery assistance to aid motor carriers, manufacturers, retailers, and insurance and logistics companies in mitigating cargo theft and fraud, and monitoring and tracking of cargo, inventory, vehicles, and equipment for supply chain theft prevention purposes, and about pipelines, terminals, storage facilities, electric grids, wind farms, solar panel farms, transmission lines, energy distribution and energy disruption; Computer services, namely, information storage in the nature of physical storage of data and documents recorded in electronic format relating to the handling, storage and regulation of hazardous waste materials; Providing online databases and information about energy, namely, energy distribution and energy distribution disruptions; Providing consulting and advisory services in the field of energy, namely, energy distribution and energy distribution disruptions; Consulting and services related thereto in the nature of consultation in the fields of piloting manned and unmanned aerial vehicles in the nature of piloting of aerial vehicles, catastrophes in the nature of ___ [specify type of service in this class, e.g., emergency automobile towing services ]providing information about risks associated with man-made perils, and energy in the nature of energy distribution and distribution disruptions; Providing information about pre-travel emergency services, namely, information about risks associated with medical conditions and medical emergencies

 

International Class 40:  Providing online databases, information and consulting about disruptions in energy generation

 

International Class 41:  Providing an interactive website featuring imagery, namely, non-downloadable videos and photographs in the fields of transportation, energy, and supply chain logistics

 

International Class 42: Consulting in the field of catastrophes, namely, ____ [specify subject in this class, e.g., computer disaster recovery planning for response to man made perils]

 

International Class 43:  Consulting in the field of catastrophes, namely, ____ [specify subject in this class, e.g., consulting in the field of emergency shelter services  for response to man made perils]

 

International Class 44:  Consulting in the field of catastrophes, namely, ____ [specify subject in this class, e.g.,  consulting in the field of emergency medical assistance  for response to man made perils];   Providing information about pre-travel emergency services, namely, information about risks associated with medical conditions and medical emergency treatment and response services

 

International Class 45:  Consulting in the field of catastrophes, namely, ____ [specify subject in this class, e.g., consulting about fire fighting services  for response to man made fires]

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Multiple Class Applications

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least eight classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Information

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

April Roach

/April Roach/

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/26/2018 FOR U.S. APPLICATION SERIAL NO. 87635507

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/26/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.